LET’S GO “LEGAL” – WHAT DOES IT ACTUALLY MEAN?

Jo PotburyA Letter Before Action (LBA) or Cease and Desist

What are they?

A Letter Before Action (LBA), sometimes known as a “Cease and Desist”,  is quite simply a letter drafted by a qualified solicitor informing a prospective defendant that unless they settle, you intend to start legal action. In the case of intellectual property (IP) rights infringement an LBA usually sets out why you believe your rights have been infringed together with evidence of your rights ownership.

How effective are they?

Out of ACID’s 400+ settlements by its accredited lawyers on behalf of members, only 4 have reached a final Court hearing and of those, many have settled satisfactorily following an effective LBA and/or a short series of legal correspondence. To the recipient it can be perceived as an official “shot across the bows” or “last chance” before more serious letters follow, which may lead to the claim being heard in Court.

Why does the cost sometimes vary and may seem high?

Generally, the rationale for a letter before action varying in costs is that, basically, some are simple and straight forward and some are much more complicated. In ACID’s experience of many legal actions, the more effective an LBA is, the better the chances are for the least amount of protracted legal response.

Another good reason for an effective LBA (which takes time to prepare) is that there should be little scope for a lawyer on the other side to challenge any points of ownership. There are also many other variables which affect the time spent i.e. gathering comprehensive information (and evidence of rights ownership) in order to prepare an effective LBA. This can be easy or complicated, often depending on the efficiency of the ACID member in giving him/her all the relevant facts and evidence of design ownership and clarity of title. As we know too,  IP law is not straight forward and it may be necessary to look through case studies and precedents to clarify the legal position. It may also be necessary to seek a second legal opinion. Why? Because compared to other rights, there is little case history under unregistered and registered design right. This all takes time.

The amount of time taken to prepare an LBA can also vary if. For example,  a lawyer has to follow up an ACID member for more information which is not forthcoming. Most lawyers charge in 6 minute slots so it is important to ensure that your lawyer has all the relevant facts so that he/she can form a legal opinion! Typically, it is not unreasonable for a lawyer to spend anything from 2 – 5/6 hours on an LBA depending on the complexity of the issue.  Another variable may be the time it takes establishing clarity of rights’ ownership – say in a license arrangement or collaborative design etc.

Watchpoints

If you discover a copy always  be prepared and save expensive legal time by having all the following in place ( the ACID Infringement Purchase Information Sheet is a fast track checklist to ensure that you have collected all the relevant information together):

1.    Archived drawings and documents ready to prove the history of your designs

2.    If you are at an exhibition always ensure that you have evidence of your design ownership with you or have easy access to this evidence

3.    A complete set of legal documents, including contracts of employment with designers, written agreements with freelance designers, suppliers, manufacturers and customers, confirming that you own all the rights in your designs

4.    If your designs or trade marks are registered at the UK Intellectual Property Office or at OHIM (The Office for Harmonization in the Internal Market), retain and archive all these valuable certificates

Many designers do not realise that intellectual property (IP) law is based on property law. When  buying a house, most people will spend several hundred pounds on employing a solicitor to check that the house is free from any unforeseen nightmares such as the seller not actually being the original owner of the property; there is a sitting tenant; there is a public footpath running through the garden; or the land has be designated for nuclear waste. It is the same in IP law, so:

If there are any documents, which are required to PROVE the ownership of your designs, these will need to be drafted and signed before an action can commence. This is when it can be costly, however, never forget that it is never wasted money, it will cover you for the future.

When lawyers ask you to PROVE YOUR CASE you are being asked to ‘prove your case’ to the Court and the other side – it is your lawyer’s job to make sure that the rights are in place at the start so that the strength of your case is not damaged.

Joanna Potbury from DHM Stallard stresses the importance of getting the letter of claim spot on in terms of setting out the claim accurately; not leaving and gaps, and also setting the right tone.  “A good letter of claim can set the scene for much of the pre-action stage and can put you in control of the debate from the off.  If there are any weaknesses or gaps, they will be exploited by the opponent, which inevitably gives the potential defendant a psychological boost, it is our job as effective lawyers to get this right.”

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